The 9th U.S. Circuit Court of Appeals in San Francisco on Tuesday reversed a federal district court’s injunction that had barred sales of VIP Products’ "Bad Spaniels" dog toy, effectively erasing a recent judicial win for Jack Daniel’s in a long-running trademark dispute.
At issue is a plush dog toy that mimics the shape and general look of Jack Daniel’s whiskey bottles but substitutes dog-themed language. The toy replaces "Old No. 7" with "the Old No. 2, on your Tennessee Carpet" and swaps customary alcohol descriptors for phrases such as "43% Poo By Vol." and "100% Smelly."
VIP Products first entered the legal fray in 2014 after receiving a cease-and-desist letter from the Lynchburg, Tennessee-based whiskey maker. The case has since spanned multiple courts and years of litigation.
An Arizona federal court initially concluded that the toy infringed and diluted Jack Daniel’s trademarks. The 9th Circuit overturned that ruling in 2020 on the basis of free speech protections. The dispute reached the U.S. Supreme Court, which in 2023 returned the case to lower courts, finding that VIP had used the trademark to identify the source of its own products in a way the First Amendment did not protect.
Following the Supreme Court’s decision, U.S. District Judge Stephen McNamee found in a subsequent district-court ruling last year that VIP’s product diluted Jack Daniel’s marks by linking the brand with dog excrement. Judge McNamee imposed a permanent ban on sales of the toy.
On Tuesday, however, a three-judge panel of the 9th Circuit reversed that ban. In its written decision the panel concluded that the record did not support an inference that the toy would injure Jack Daniel’s reputation. The court stated: "Bad Spaniels is a parodic dog toy not intended for human consumption. There is no evidence in the record from which a court could reasonably infer that scatological references made on a dog toy have the same likelihood of generating disgust as identical references on a consumable product meant for humans might."
The appeals court ruling represents the latest chapter in a 12-year legal dispute between the whiskey producer and the maker of a novelty pet product. The decision overturns the district judge’s finding that the parody constituted dilution and removes the permanent sales ban previously imposed.
Legal observers and the companies involved will likely track whether this ruling prompts further proceedings, but the 9th Circuit’s panel clearly framed its conclusion around the context and intended audience for the product in question.
Summary
- The 9th U.S. Circuit Court of Appeals on Tuesday reversed a district court injunction prohibiting sales of VIP Products' "Bad Spaniels" toy.
- The court found no evidence that the scatological parody on a dog toy would harm Jack Daniel's reputation in the same way similar language would on a consumable product.
- The case has a 12-year history, including prior 9th Circuit and U.S. Supreme Court rulings and a district court decision last year that had imposed a permanent ban.